Patent Law and Policy

1
Patent Law and Policy

• University of Oregon Law School
• Fall 2008
• Elizabeth A. Tedesco

Patent Law and Policy, Fall 2008 Class 6,
Slide 1
2
Conditions for Patentability Novelty

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent, or
• (e) the invention was described in - (1) an
  application for patentby another filed in the
  United States before the invention by the
  applicant for patent or (2) a patent granted on
  an application for patent by another filed in the
  United States before the invention by the
  applicant for patent, except that a PCT
  application shall have the effects for the
  purposes of this subsection of an application
  filed in the United States or
• (g)(1) during the course of an interference,
  another inventor involved therein
  establishesthat before such persons invention
  thereof the invention was made by such other
  inventor and not abandoned, suppressed, or
  concealed, or (2) before such person's invention
  thereof, the invention was made in this country
  by another inventor who had not abandoned,
  suppressed, or concealed it.

Derivation
(f) he did not himself invent the subject matter
sought to be patented
Patent Law and Policy, Fall 2008 Class 6,
Slide 2
3
Schering Corp. v. Geneva Pharmaceuticals, Inc.
(2003)

• Claimed 233 patent covers loratadine and 716
  patent, filed more than three years after 233
  patent issued, covers DCL, the metabolite formed
  in the patients body upon ingestion of
  loratadine.
• In general, a limitation or the entire
  invention is inherent and in the public domain if
  it is the natural result flowing from the
  explicit disclosure of the prior art.
• If granting patent protection on the
  disputed claim would allow the patentee to
  exclude the public from practicing the prior art,
  then that claim is anticipated.

Patent Law and Policy, Fall 2008 Class 6,
Slide 3
4
Blocking Patents and Enforcement

• Process Patent for New Use
• First, Smith claims compound A (with elements a
  b c).
• Then, Jones claims the process of using compound
  A (a b c) for X.
• Does Smith anticipate the Jones claims?
• If earlier, would Jones anticipate the Smith
  claims?
• Does Smith infringe Jones patent by practicing
  her invention?
• What if Smith wants to use compound A for X?
• Does Jones infringe Smiths patent by practicing
  his invention?
• PharmaSales Co. only sells compound A, does not
  use it.
• Consumer uses compound A for purpose X.
• Does PharmaSales infringe the Smith patent?
• Does PharmaSales infringe the Jones patent?
• Does Consumer infringe the Jones patent?

Patent Law and Policy, Fall 2008 Class 6,
Slide 4
5
Blocking Patents and Enforcement

• Product Patent for New Use
• First, Smith claims compound A (with elements a
  b c).
• Then, Jones claims compound A
• (with elements a b c d (substantially
  pure A)).
• Does Smith anticipate the Jones claims?
• If earlier, would Jones anticipate the Smith
  claims?
• Does Smith infringe Jones patent by practicing
  her invention?
• What if Smith wants to use compound A for X?
• Does Jones infringe Smiths patent by practicing
  his invention?
• PharmaSales Co. sells A (suited for use for X)
• Does PharmaSales infringe the Jones patent?

Patent Law and Policy, Fall 2008 Class 6,
Slide 5
6
102(a) Novelty

• 1 No Patent if, before date of invention, the
  invention was
• A known or
• B used
• C by others
• D in this country, or
• 2 if, before date of invention, the inventions
  was
• A patented or
• B described in a printed publication
• C anywhere.

Patent Law and Policy, Fall 2008 Class 6,
Slide 6
7
102(a) Novelty

• Known by others
• National Tractor Pullers Assn v. Watkins
• Alleged prior art No longer existing alleged
  tablecloth drawings known to a handful of
  people.
• Prior knowledge must be reasonably accessible
  to the public
• The Barbed Wire Patent
• Corroboration is requires of any witness whose
  testimony alone is asserted to invalidate a
  patent, regardless of the witness level of
  interest in the lawsuit.
• Used by others
• Rosaire v. Baroid Sales Divison, National Lead
  Co.
• Sufficient where work was done openly and in the
  ordinary course of the activities of the
  employer. Affirmative act to bring the work to
  the attention of the public at large not
  required.
• Abandoned experiments not use by others
• Public merely means not secret.

Patent Law and Policy, Fall 2008 Class 6,
Slide 7
8
102(a) Novelty

• Printed publications
• Jockmus v. Leviton
• Even though ephemeral, commercial catalogue from
  Germany is printed publication
• Aluminum Co. Progress letter was implicitly
  confidential, not a printed publication.
• In re Klopfenstein
• If in library, must be catalogued or indexed in
  a meaningful way.
• If ephemeral, look to factors such as time of
  display, expertise of audience, expectation
  of copying, ease of copying.
• Basic inquiry whether interested members of
  the relevant public could obtain the
  information if they wanted to.
• Must be published as of critical date.
• Patented
• Reeves Bros. v. United States Laminating Corp.
• Patented if foreign document grants a patent
  right to exclude others from producing, using, or
  selling the invention for a specified period of
  time.
• If only patented and not published, only
  claims are considered prior art.

Patent Law and Policy, Fall 2008 Class 6,
Slide 8
9
Alexander Milburn Co. v. Davis (1926)

• Timeline
• Jan. 31, 1911 Clifford files an application for
  a patent that discloses, but does not claim, an
  improvement in welding and cutting apparatus.
• Mar. 4, 1911 Whitford files an application
  claiming the improvement disclosed in Cliffords
  application. Whitfords filing date was his date
  of invention because there was no evidence
  carrying Whitfords invention further back of
  his filing date.
• Feb. 6, 1912 Cliffords patent is issued.
• June 4, 1912 Whitfords patent is issued.
• Obviously one is not the first inventor if, as
  is the case here, somebody else has made a
  complete and adequate description of the thing
  claimed before the earliest moment to which the
  alleged inventor can carry his invention back.

Patent Law and Policy, Fall 2008 Class 6,
Slide 9
10
102(e) Novelty

• No patent if, before date of invention, the
  invention was described in
• (1) an application for patent, published under
  section 122(b), by another filed in the United
  States, or
• (2) a patent granted on an application for
  patent by another filed in the United States, or
  
• disclosures in PCT applications designating
  the United States and published in English as of
  their international filing date

Patent Law and Policy, Fall 2008 Class 6,
Slide 10
11
Conditions for Patentability Novelty

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent, or
• (e) the invention was described in - (1) an
  application for patentby another filed in the
  United States before the invention by the
  applicant for patent or (2) a patent granted on
  an application for patent by another filed in the
  United States before the invention by the
  applicant for patent, except that a PCT
  application shall have the effects for the
  purposes of this subsection of an application
  filed in the United States or
• (g)(1) during the course of an interference,
  another inventor involved therein
  establishesthat before such persons invention
  thereof the invention was made by such other
  inventor and not abandoned, suppressed, or
  concealed, or (2) before such person's invention
  thereof, the invention was made in this country
  by another inventor who had not abandoned,
  suppressed, or concealed it.

Derivation
(f) he did not himself invent the subject matter
sought to be patented
Patent Law and Policy, Fall 2008 Class 6,
Slide 11
12
102(e) Hypotheticals

• On January 1, 2004, I file an application
  claiming A but also disclosing B.
• On June 1, 2004, Smith files an application
  claiming B.
• Can Smith obtain a patent on B?
• Will Smith and I get into an interference?
• What does the PTO do with Smiths application?
• 1/1/04 Jones files a U.S. application.
• 7/1/05 Jones application is published by the
  PTO claims A but fully discloses B.
• 12/1/05 Jones patent issues. As issued, it
  claims A and B too.
• 5/1/06 I file an application seeking a U.S.
  patent on B.
• 12/1/06 U.S. courts invalidate Jones patent
  for failure to comply with the Best Mode
  requirement.
• Can I get a U.S. patent on B?
• ? Maybe, if I can prove an invention date prior
  to 1/1/04

Patent Law and Policy, Fall 2008 Class 6,
Slide 12
13
102(e) Hypotheticals

• 1/1/04 Jones files an application in India.
• 7/1/05 Jones application is published by the
  Indian patent office
  it claims A but fully discloses B too.
• 12/1/05 Jones Indian patent issues. As issued,
  it claims A and B too.
• 5/1/06 I file an application seeking a U.S.
  patent on B.
• 12/1/06 Indian courts invalidate Jones patent.
  
  Jones never seeks U.S. patent rights.
• Can I get a U.S. patent on B?
• ? Maybe, if I can prove an invention date prior
  to 7/1/05

Patent Law and Policy, Fall 2008 Class 6,
Slide 13
14
102(f) Derivation
(f) he did not himself invent the subject matter
sought to be patented

• Campbell v. Spectrum Automation Co.
• Credibility determination re which person
  actually invented
• Simple inquiry, timeless, global
• Evidence must be clear and convincing
• Corroboration Rule
• Oral testimony alone cannot defeat an issued
  patent there must be some corroboration, though
  a rule of reason is applied in determining the
  sufficiency of corroboration.

Patent Law and Policy, Fall 2008 Class 6,
Slide 14